The expected uptick in the issuance of United State Patent and Trademark Office (USPTO) audits means practitioners and trademark owners alike will need to be more diligent in identifying goods or services in trademark...more
Short answer: Yes, but… Short answer: Yes, but… Many practitioners in sensitive technology areas file patent applications with non-publication requests or may abandon their applications if examination is not going well...more
Precedential and Key Federal Circuit Opinions - SANHO CORP. v. KAIJET TECHNOLOGY INTERNATIONAL LIMITED, INC. [OPINION] (2023-1336, 7/31/24) (Dyk, Clevenger, Stoll) - Dyk, J. The Court affirmed the Board’s decision...more
The United States Patent and Trademark Office (USPTO) has updated the deadline to respond to Office Actions for trademark applications. As of December 3, 2022, trademark applicants now have three months (instead of the...more
The United States Patent and Trademark Office has shortened the deadline for responding to Office Actions regarding trademark applications. Beginning on December 3, 2022, trademark applicants will have three months, instead...more
U.S. trademark practitioners will no longer have a six-month window to respond to Office Actions issued by the United States Patent and Trademark Office (“USPTO”) on certain pending trademark applications. As of DECEMBER...more
As part of the Trademark Modernization Act of 2020 (reported in the IP Intelligence Blog on Dec. 23, 2021), beginning on Dec. 3, trademark applicants will have three months (with a possible three-month extension) to respond...more
The United States Patent and Trademark Office (USPTO) recently enacted a rule change that will impact all trademark applications filed nationally in the United States (rather than through the Madrid Protocol)....more
Attention trademark practitioners: the finalized rules implementing the 2020 Trademark Modernization Act (“TMA”) go into effect this weekend, on December 18, 2021. Significantly, this marks the availability of three new...more
As we wrote in Parts I and II in this series, the Trademark Modernization Act of 2020 (“TMA”) was signed into law on December 27, 2020, containing several significant amendments to the Lanham Act. This post will cover two of...more
In case you missed it, President Trump signed the Trademark Modernization Act of 2020 (TMA) into law on December 27, 2020. The TMA, which garnered bi-partisan support and was included in the COVID-19 Economic Relief Bill,...more
The Trademark Modernization Act of 2020 (TMA) was signed into law on December 27, 2020, making several changes to the Lanham Act that have important effects on trademark owners’ brand protection programs. Consistent with the...more
In Intra-Cellular Therapies, Inc. v. Iancu, the Federal Circuit agreed with the USPTO’s Patent Term Adjustment (PTA) calculation that charged a deduction for “applicant delay” for time after the applicant filed a first...more
Love him or hate him, everyone agrees that NFL Quarterback Tom Brady is terrific, except the USPTO. Earlier this year, Mr. Brady’s company filed to register the trademark “Tom Terrific” for t-shirts and various other...more
Effective August 3, 2019, all foreign-domiciled trademark applicants, registrants and parties to proceedings before the Trademark Trial and Appeal Board must be represented by an attorney who is licensed to practice law in...more
Patent attorneys and patent agents ("patent practitioners") deal with the best and brightest engineers and scientists on a daily basis. As inventors, these engineers and scientists understand the technology associated with...more
In January 2015, Pitney Bowes filed an intent-to-use trademark application for the logo shown here for use with mailing services, including postal delivery, parcel delivery, and delivery of mail to post offices for posting...more
In my almost 17 years of practice before the United States Patent and Trademark Office ("PTO"), by far the most common telephone call I receive from inventors is a frantic inquiry about an Office Action received from the PTO...more
The Post-Prosecution Pilot Program, dubbed “P3” by the United States Patent and Trademark Office (USPTO), offers applicants a new, and arguably improved, path through the after-final landscape. P3 provides applicants the...more
Here is an argument we are using in response to rejections under 35 USC §101 that allege the claims are directed to an abstract idea and are patent ineligible. This is useful in Office action responses, and appeals. The...more
On September 28, 2015, Hi-Tech Pharmaceuticals, Inc. (“Hi-Tech”), a Georgia corporation, brought a trademark infringement action against Dynamic Sports Nutrition, LLC d/b/a Anabolic Research (“Dynamic”), and Brian Clapp...more
Patent prosecution involves one side arguing for, and another side arguing against, the validity of claims in a patent application. This takes the form of a written discourse, in which an Examiner for the USPTO (United...more
Suppose your client’s patent application is rejected as allegedly obvious under 35 USC §103, and the Examiner cites one or more references and sets forth an “obvious to try” rationale in an Office action. Here are some tools...more